Narrative Opinion Summary
In this case, SmithKline Beecham Corporation and Beecham Group P.L.C. appealed a decision by the Massachusetts District Court invalidating claims 2 and 4 of U.S. Patent No. 4,420,639. The claims were invalidated for anticipation under 35 U.S.C. § 102(b) based on prior art and for unenforceability due to alleged inequitable conduct. The appellate court upheld the lower court's ruling, emphasizing that anticipation is determined by whether a prior art reference discloses each limitation of the claim and enables a skilled practitioner to understand the invention. The patent claims related to nabumetone, an anti-inflammatory drug, were anticipated by a paper authored by Chatterjea and Prasad, which disclosed its chemical structure and synthesis process. Despite Beecham's argument about an error in a footnote of the prior art, the court found it unconvincing as the error had been previously corrected. Expert evidence further established that the solid form of nabumetone is an inherent property, thus affirming the claims' anticipation. The court did not address the inequitable conduct issue, as the anticipation finding was dispositive.
Legal Issues Addressed
Anticipation under 35 U.S.C. § 102(b)subscribe to see similar legal issues
Application: The court affirmed that claims 2 and 4 were invalid due to anticipation because the prior art by Chatterjea and Prasad disclosed each limitation of the claims, enabling a skilled person to understand the invention.
Reasoning: A claim is considered anticipated if a single prior art reference discloses each limitation either explicitly or inherently, and it must enable a person skilled in the art to understand the claimed invention.
Inherent Anticipation of Patent Claimssubscribe to see similar legal issues
Application: The court agreed with the finding that the solid form of nabumetone is an inherent property, therefore claims 2 and 4 are inherently anticipated by Chatterjea and Prasad's publication.
Reasoning: Expert testimony established that nabumetone is produced in an oil form but solidifies at room temperature, leading to the conclusion that the solid form is an inherent property of the compound.